More CRISPR interfering inventors may come from Vilnius

Earlier this month, we were interviewed by The Scientist regarding the side inventorship dispute between Feng Zhang and Luciano Marraffini on some of the Broad patent applications. Public registers at the USPTO, WIPO and the EPO expose further details of the otherwise un-publicized legal battles for invention ownership between their employers (the Broad Institute of Harvard and MIT and Rockfeller University), back from the 2012-2013 early filings.

In the same issue of The Scientist, Catherine Coombes from HGF has compiled a very well documented opinion paper which explains the underlying international patent law issues. She highlights the importance of setting up early IP assignment agreements in collaborative research, to prevent later legal conflicts. Here indeed, the Broad Institute and Rockfeller face a risk to lose their patent investments both in the US, where we can anticipate further interference proceedings under the first-to-invent specifics of the US patent law, as well as internationally, where the inventor/applicant mismatch possibly invalidates the early PCT priority date.

The Rockfeller/Broad inventorship dispute was actually just one of several unusual facts in terms of inventor management that we spotted in the registers when building our first TAL & CRISPR patent landscape, back in July 2014.

First, there was this amazing Zhang declaration in support to the Broad patent prosecution. We have managed hundreds of patent families from dozens of inventors in the past 10 years in collaboration with various law firms worldwide, and we only remember a couple of occasions where we had to ask an inventor to assist the US prosecution with his academic expertise backgrounder, but that was still part of the regular prosecution process. This affidavit registration was quite unusual to us, as we spotted on our blog in November 2014.

Second, by looking at the USPTO register filings in the early prosecution stages of the so-called Doudna patent, we could spot the divergence of interests among its joint inventors, in particular those represented by University of California on the one hand and Emmanuelle Charpentier on the other hand.

Third, we observed a couple of PCT filings highlighting another possible interference in naming inventors as part of a collaboration project, as far as we could guess solely from public information sources. In their September 2016 SEC filings for IPO, CRISPR Therapeutics also pointed out those PCT applications as further patent families that may enter into another interference proceedings, due to their shared, early priority date (March 2012):
WO2013141680  filed on March 15th, 2013 by a European patent attorney based in Lithuania, naming only 3 inventors from University of Vilnius.
WO2013142578 filed on March 20th, 2013 by a US patent lawyer, adding 4 inventors, including the R&D director from Thermo Fisher Scientific Baltics (formerly Fermentas) in Lithuania, and the R&D director from Dharmacon, Inc, another Thermo Fisher venture that was a few months later transferred to GE Healthcare. One of the extra inventors, scientist Monika Glemžaite, actually received a Young Inventor Gold Medal from WIPO for her work in 2014.

Both those PCT patent applications disclose, and attempt to claim (no patent granted yet) certain elements of a CRISPR-Cas9 system including a Cas9 nickase, isolated crRNA, and their use for site-specific modification of a target DNA. It is no surprising they both received anonymous third party observations directly at the WIPO in July 2014 (such observations can be filed online for free at the WIPO until up to 10 months after the PCT publication, so they can be transferred with the patent files to all foreign patent offices at the time of the national phase entry). The ‘680 patent family was then only further prosecuted in the US, while the ‘578 is seeking a broader international coverage. To make the final landscape even more complex, Vilnius University (solely) later entered into an exclusive licensing agreement with DuPont in January 2015 on the Cas9 technology.

This zoom on the Vilnius-originated IP is just another item in the complex CRISPR IP landscape – as stated by competing CRISPR Therapeutics, Intellia and Editas in their respective IPO filings, the uncertainty about who owns what IP rights will remain for a while. But that may actually favor an even more open, competitive environment for the CRISPR technology to develop into a diversity of applications. Business arrangements such as non exclusive licensing deals and maybe why not a patent pool facilitator to enable a neutral, fair and non-discriminatory one-stop shopping desk for the industry may be a practical way forward, in a very different approach than the de facto other precedent IP locks on other genome engineering technologies such as ZFNs and TALENs. From what we see of application claims developing in the patent landscape every month, clearly, the pioneering IP ownership disputes are certainly not preventing innovation in this field.

Interested to learn more about the CRISPR patent landscape development? please check our CRISPR patent analytics offerings!

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